The opponent claimed in its grounds of opposition that the words LA SOURCE are descriptive and without distinctive character; secondly that it has a registration in Class 16 for the mark THE SOURCE in respect of publications and that it has published a magazine with that title since 1991 relating to the hip-hop music scene, its culture and politics. As a result of this use the opponent claimed that the services listed in Classes 35, 38 and 42 offended against the provisions of Section 5(4)(a) of the Act. The opponent filed dictionary references to indicate the descriptive nature of the words LA SOURCE and also turnover figures relating to the sale of its magazine.

The applicant also filed evidence; a copy of a front page from a catalogue dated 1998/9 with the title LA SOURCE and offering clothing for sale; a list of hits from the internet of the words THE SOURCE and some information arising from a GOGGLE search on the internet.

Under Section 5(4)(a) the Hearing Officer decided that even if the opponent had a reputation in its magazine, and he accepted that this was likely, there was no evidence to show how its reputation would extend to the services listed in the applicant’s Classes 35, 38 and 42. Indeed he was of the view that the fields of activity of the two parties were quite distant and even though the respective marks might be similar he did not consider it likely that the public would believe the respective parties were in any way connected. There would be no misrepresentation. Opposition on this ground failed.

The opposition also failed under Sections 3(1)(b) and (c) because the Hearing Officer was of the opinion that as regards Section 3(1)(b) the public would see the mark LA SOURCE as a French mark and not see it as being the equivalent of the words THE SOURCE. As regards 3(1)(c) the Hearing Officer was of the view that LA SOURCE was not a normal way of describing the types of goods and services or their characteristics, as included in the specification.